Cesar Peres Dulac Müller logo

CPDMA BLOG

Category:
Date: 19 de October de 2022
Posted by: CPDMA Team

STJ decides that the use of a competitor's trademark as a keyword in advertisements characterizes a crime of unfair competition

Imagem ilustrativa de um teclado de onde é projetada a marca de diversos itens.

Advertising through paid media is a primary source of customer prospecting in the digital market. It happens that some companies, when hiring advertising platforms, choose to use the brand of others as a keyword to better position their ad. The result of this is that the consumer, when searching for brand "A", already consolidated in a certain market niche, will have as the first result the ad made by brand "B", even before brand "A" itself.

As a result, in the recent judgment of Special Appeal 1.937.989/SP, the Superior Court of Justice unanimously decided that indexing a sponsored ad to a competitor's trademark characterizes, in and of itself, the crime of unfair competition provided for in clauses III and V of art. 195 of the Industrial Property Law. According to Justice Luis Felipe Salomão, unfair competition exists when the capture of clientele is done by trickery, such as the use of a third party's trademark as a keyword in sponsored links. This practice produces evident dilution of the trademark and, consequently, loss of prominence and damage to the company's advertising.

Notwithstanding the absence of express legal prohibition, the judgment of REsp 1.937.989/SP shows a tendency of the STJ in identifying the limitations of free enterprise within the digital world, repressing conducts that promote confusion or undue association to third parties' trademarks.

The trademark registration guarantees its holder the exclusive use throughout the national territory, being assured the right to care for its material integrity or reputation. Therefore, to prevent the trademark from being diluted in the economic market, it is important to check with search engines - especially Google - to see if undue indexing of your trademark by a competitor is occurring. If such an act is verified, it can be characterized as unfair competition, giving the owner of the injured trademark the possibility to act to stop the infringing conduct, as well as seek compensation for the resulting losses.

By Thana Roberta Camargo Mattiello

CPDMA Team

References:

Portal Jota

Portal Migalhas

Portal Conjur - 12/09/2022

Portal Conjur - 23/08/2022

Return

Recent posts

Misuse of a trademark by a former partner can be recognized not only as unfair competition, but also as bad faith.

On February 14, the newspaper "Valor Econômico" published an article in which it was pointed out that the São Paulo Court of Justice had recognized unfair competition in the improper use of a trademark by a former partner. The article, however, does not give the number of the case in which it would be possible to analyze more details of the decision, but it does inform that the individuals had signed a [...]

Read more
The first sanctions applied by the National Agency for the Protection of Personal Data (ANPD) were a wake-up call for companies: the LGPD is a serious law and must be complied with.

The General Personal Data Protection Law - Law No. 13,709/18 (LGPD) was published in 2018 and came into force in 2020. This deadline was given to public and private legal entities (processing agents) that collect, store or process the personal data of individuals, in Brazil or abroad, in order to [...]

Read more
Business position on the recent STF decision that ruled that it is constitutional for trade unions to charge assistance contributions

Recently, the Federal Supreme Court (STF) unanimously ruled that unions can collect an assistance contribution, including from non-member employees, in ARE 1.18.459 (Topic 935 of the General Repercussion), as long as the worker is guaranteed the right to object, establishing the following thesis: "it is constitutional to establish, by agreement or [...]

Read more
The new chapter in the legal dispute involving the term "HELLES", registered as a 'trademark'.

Recalling the case... It all started at the beginning of 2019, when the brewery Fassbier gave extrajudicial notice to a series of breweries in Rio Grande do Sul for the alleged misuse of the term HELLES, claiming to have exclusive use of the expression, given that the word was registered as a trademark. Not satisfied with [...]

Read more
Suspension of labor executions against companies in the same economic group

In a recent decision, the STF suspended the processing of labor executions that discuss the inclusion, in the execution phase, of a company that is part of an economic group that did not participate in the knowledge process. In labor proceedings, when the execution phase is reached and the main debtor does not have enough assets to pay the debt, many [...]

Read more
STJ decides that the legal personality of a civil association can be disregarded, but limits liability to the directors

The 3rd Panel of the Superior Court of Justice (STJ) [1] dismissed a special appeal filed by the directors of a civil association, which had its legal personality disregarded in a case involving the improper use of a trademark. The Court, in a judgment drafted by Justice Marco Aurélio Belizze, held that the disregard of [...]

Read more
crossmenuchevron-down
en_USEnglish
linkedin Facebook pinterest youtube lol twitter Instagram facebook-blank rss-blank linkedin-blank pinterest youtube twitter Instagram